Appeal No. 99-0228
Application No. 08/721,504
hollow tube having a diameter that is less near the distal end
than at the proximal end.
MacGregor is directed to a hollow punch for piercing soft
materials such as leather. The punch has a sharp edge at its
distal end and the hollow opening tapers towards the cutting
edge so that the slugs can gradually move along the interior
of the punch without becoming wedged therein (column 2). It
is the examiner’s position that it would have been obvious to
one of ordinary skill in the art to provide the Dann punch
with a tapered interior opening in view of the teachings of
MacGregor,
suggestion being found in permitting the slugs to move through
the Dann interior opening without becoming wedged therein. We
do not agree.
One of the key aspects of the Dann invention is to
subject the slug to a more restricted opening as it moves away
from the cutting edge of the tube, in order to cause it to
become cup-shaped. Eliminating this feature would destroy the
Dann invention, which in our view would operate as a
disincentive to make the changes proposed by the examiner. In
addition, such a modification would appear to require a
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